Trials@uspto.gov Paper 31
`571-272-7822 Date: November 30, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`TARGET CORPORATION,
`Petitioner,
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`v.
`
`PROXICOM WIRELESS, LLC,
`Patent Owner.
`____________
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`IPR2020-00977
`Patent 8,369,842 B
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`____________
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`Before BRIAN J. McNAMARA, CHARLES J. BOUDREAU, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
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`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Google Exhibit 1027
`Google v. SecCommTech
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`I. INTRODUCTION
`A. Background
` Target Corporation (“Petitioner”) filed a Petition for inter partes
`review of claims 1, 5, 9, 12–15, 22, and 24 (“the challenged claims”) of U.S.
`Patent No. 8,369,842 B2 (Ex. 1001, “the ’842 patent”). Paper 2 (“Pet.”), 1.
`Proxicom Wireless, LLC (“Patent Owner”) filed a Preliminary Response.
`Paper 9. On December 4, 2020, we instituted an inter partes review of the
`challenged claims on all grounds raised in the Petition. Paper 10
`(“Institution Decision” or “Inst. Dec.”), 39.
` Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 19, “PO Resp.”), Petitioner filed a Reply to the Patent
`Owner Response (Paper 22, “Pet. Reply”), and Patent Owner filed a
`Sur-reply to Petitioner’s Reply (Paper 23, “PO Sur-reply”). An oral hearing
`was held on September 1, 2021. A transcript of the hearing has been entered
`into the record. Paper 29.
` In our Scheduling Order, we notified the parties that “any arguments
`for patentability not raised in the [Patent Owner] response may be deemed
`waived.” See Paper 11, 10; see also Patent Trial and Appeal Board
`Consolidated Trial Practice Guide 66 (Nov. 2019) (“The patent owner
`response . . . should identify all the involved claims that are believed to be
`patentable and state the basis for that belief.”).
`1
` For the reasons that follow, we conclude that Petitioner has proven by
`a preponderance of the evidence that claims 1, 5, 9, 12–15, 22, and 24 of the
`’842 patent are unpatentable.
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`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`B. Real Parties in Interest
` Petitioner identifies itself as the sole real party in interest. Pet. 5.
` Patent Owner identifies itself as the sole real party in interest.
`Paper 4, 2.
`C. Related Matters
` The parties indicate that the ’842 patent is the subject of the following
`district court proceeding:
`Proxicom Wireless, LLC v. Target Corporation, No. 6:19-cv-
`1886 (M.D. Fla. filed Oct. 2, 2019) (“the District Court
`litigation”).
`2
`Pet. 5; Paper 4, 2. The parties further note various petitions for inter partes
`review concerning separate patents, and Patent Owner identifies two
`pending patent applications. Pet. 5–6; Paper 4, 2–3.
`D. The Challenged Patent
` The ’842 patent disclosure “is generally concerned with facilitating
`the exchange of information and transactions between two entities associated
`with two wireless devices when the devices are in close proximity to each
`other utilizing both a short range and a long range wireless capability.”
`Ex. 1001, 2:55–59. The devices use a short range communication protocol,
`such as Bluetooth, only to detect the presence of other devices and use a
`long range communication protocol, such as Wi-Max, to communicate with
`a central server and to perform the actual substantive communications with
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`2 The identified proceeding was stayed on June 17, 2020, pending resolution
`of ten petitions for inter partes review filed by Petitioner. See Paper 6.
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`other devices. Id. at 6:35–48. Each device transmits identifier information
`via short range communication as a proximity detection process. Id.
`at 6:51–55. This use of peer-to-peer short range communication beneficially
`allows proximity between devices to be determined without the need of a
`global positioning system (GPS), which may not always be present or
`available for use. Id. at 3:57–64. Use of a central server to mediate
`communications between the devices beneficially provides security to the
`transaction, allows for anonymity between the parties, and implements
`policy enforcement. Id. at 4:14–62.
` In one application, only a user’s device is capable of long range
`communication and the second device is only capable of broadcasting its
`identifier information. Ex. 1001, 7:22–31. This application is illustrated in
`Figure 2, which is reproduced below:
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`Figure 2 shows a block diagram of fixed broadcast device 204 and mobile
`device 202. Id. at 5:8–9. The user’s mobile device detects the broadcast
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`device and transmits the broadcast device’s identifier information, along
`with a request for information regarding the broadcast device, to central
`server 100. Id. at 14:48–60. The server determines what information
`regarding the broadcast device is available and transmits a description of the
`information to the user’s device. Id. at 14:61–63. The user then has the
`option to download the information. Id. at 14:63–15:3. The server may also
`coordinate the several steps of an electronic commerce transaction between
`the user’s device and the broadcast device. Id. at 17:36–18:64.
`E. The Challenged Claims
` Petitioner challenges claims 1, 5, 9, 12–15, 22, and 24 of the
`’842 patent. Pet. 1. Claims 1 and 24 are independent. Claim 1 is illustrative
`of the challenged claims and is reproduced below:
`1. A method for facilitating a transaction between a first
`wireless device and a second wireless device utilizing a server,
`comprising the steps of:
` communicating an identifier associated with said second
`wireless device to said first wireless device using a short range
`wireless connection, said first wireless device providing said
`identifier to said server, said server establishing location
`information associated with said first and said second wireless
`devices,
` determining authentication information relating to said
`second wireless device or an entity associated with said second
`wireless device, transferring said authentication information
`between the server and the first wireless device and
` said server providing authorization to said first wireless
`device or said second wireless device to proceed with said
`transaction based at least in part upon said identifier, said
`authentication information and the location information of said
`first and second wireless device.
`Ex. 1001, 23:22–40.
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`F. Instituted Grounds of Unpatentability
` The Petition relies on the following prior art references:
`Name Reference Exhibit
`Mgrdechian US 7,545,784 B2, issued June 9, 2009 1005
`Swartz US 6,837,436 B2, issued Jan. 4, 2005 1007
`Kulakowski WO 2007/084973 A2, published July 26, 2007 1013
` We instituted trial based on all asserted claims and grounds of
`unpatentability as follows:
`Claim(s) Challenged 35 U.S.C. § Reference(s)
`1, 5, 9, 12, 14, 15, 22,
`24
`102(b)3 Mgrdechian
`1, 5, 9, 12, 14, 15, 22,
`24
`103(a) Mgrdechian
`12–14 103(a) Mgrdechian, Swartz
`22 103(a) Mgrdechian, Kulakowski
`Pet. 12. Petitioner submits a declaration of Mr. David Hilliard Williams
`(Ex. 1003, “Williams Declaration”) in support of its contentions. Patent
`Owner submits a declaration of Michael Foley, Ph.D. (Ex. 2010, “Foley
`Declaration”) in support of its contentions.
`
`3 The application resulting in the ’842 patent was filed prior to the date when
`the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284 (2011), took effect. Thus, we refer to the pre-AIA version of
`sections 102 and 103.
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`II. ANALYSIS
`A. Principles of Law
` To prevail in its challenge to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims challenged
`in the Petition are unpatentable. 35 U.S.C. § 316(e) (2018); 37 C.F.R.
`§ 42.1(d) (2018). This burden of persuasion never shifts to Patent Owner.
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015).
` “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every
`limitation is found either expressly or inherently in a single prior art
`reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed.
`Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d
`1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single
`prior art disclosure of all elements of a claimed invention arranged as in the
`claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332
`(Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
`1548 (Fed. Cir. 1983)).
` A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations including (1) the scope and content of
`the prior art, (2) any differences between the claimed subject matter and the
`prior art, (3) the level of skill in the art, and (4) when in evidence, any
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`objective evidence of nonobviousness.
`4 Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`B. Level of Ordinary Skill in the Art
` Petitioner contends that a person having ordinary skill in the art at the
`time of the invention (“POSITA”) would have had “a Bachelor’s degree in
`Electrical Engineering, or a related field, and approximately 3-5 years of
`professional experience in the field of wireless communications.” Pet. 17.
`Petitioner acknowledges that “graduate education could substitute for
`professional experience” and “significant experience in the field could
`substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 8–20, 36–38).
` Patent Owner concedes that the level of skill as defined by Petitioner
`“is sufficient for the Board to evaluate the Petition Grounds.” PO
`Resp. 16–17.
` The level of ordinary skill in the art usually is evidenced by the
`references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill
`proposed by Petitioner appears to be consistent with that of the references,
`and we apply Petitioner’s proposed level of ordinary skill for purposes of
`this Decision.
`C. Claim Construction
` In an inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
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`4 The parties have not directed us to any such objective evidence.
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`action under 35 U.S.C. § 282(b), including construing the claims in
`accordance with the ordinary and customary meaning of such claims as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. 37 C.F.R. § 42.100(b) (2019). Thus, we apply the
`claim construction standard as set forth in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc).
` Claim terms are generally given their ordinary and customary
`meaning as would be understood by one with ordinary skill in the art in the
`context of the specification, the prosecution history, other claims, and even
`extrinsic evidence including expert and inventor testimony, dictionaries, and
`learned treatises, although extrinsic evidence is less significant than the
`intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification is
`dispositive, and it is the single best guide to the meaning of a disputed term.
`Id. at 1315.
` Only those terms that are in controversy need be construed, and only
`to the extent necessary to resolve the controversy. Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999)).
` Petitioner contends that it “interprets the claim terms according to
`their plain and ordinary meaning consistent with the [S]pecification.”
`Pet. 18 (citing Ex. 1003 ¶¶ 22–24). Petitioner asserts that the challenged
`claims use “a term of degree (e.g., ‘short range wireless connection’),” but
`does not explain how this assertion affects claim construction. Id. Petitioner
`acknowledges that “[a] district court in another proceeding has construed
`terms in related patents,” but argues that those “constructions do not impact
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`the outcome of this IPR, because the prior art meets the claims under these
`constructions.” Id. (citing Ex. 1003 ¶ 67; Ex. 1021).
` “Patent Owner does not propose any terms for construction . . . .” PO
`Resp. 15–16.
` We determine that no express construction of any term is necessary.
`For purposes of this Decision, we apply the plain and ordinary meaning to
`the claim language.
`D. Overview of the Asserted Prior Art
`1. Mgrdechian
` Mgrdechian discloses a wireless communication system. Ex. 1005,
`1:32–35. Mgrdechian recognizes that on-line dating and social networking
`applications allow users to search for previously unknown parties based on
`specific qualities or characteristics, but contends that “there is no efficient
`methodology . . . where[by] a person may quickly obtain information about a
`specific individual that he or she may encounter but does not yet know
`anything about.” Id. at 2:43–57. Mgrdechian purports to overcome this
`problem by providing a wireless communication system. Id. at 3:6–9.
` Figure 3A illustrates Mgrdechian’s system and is reproduced below:
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`Figure 3A illustrates Mgrdechian’s wireless communication system 300,
`showing wireless devices 310, 320 that communicate directly using local
`wireless protocol 330. Ex. 1005, 9:34–37. The system also includes remote
`computer system 360, which communicates with the wireless devices via
`wireless network 340 and Internet 350 and provides access to additional
`information regarding users of the wireless devices. Id. at 10:48–61.
` Mgrdechian is particularly directed to a dating application ( see
`Ex. 1005, 11:53–14:45), but contemplates use in other applications (see id.
`at 14:49–15:42). In general, communication is initiated by a first user,
`referred to as the initiator or “User A” using “Device A,” who wants to
`gather information about another user, referred to as the target or “User B”
`using “Device B.” Id. at 9:40–55. Device A initiates communication by
`transmitting an identification request over the local wireless protocol. Id.
`at 10:38–40. Wireless devices within range of Device A, such as Device B,
`receive the request and respond by sending a reply message that includes
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`that device’s identification (“device ID”). Id. at 10:41–47. Device A
`receives the reply message and transmits the device ID to the remote
`computer system over the wireless network and the Internet. Id.
`at 10:48–52. The computer system receives and uses the device ID to access
`information associated with the device ID within database 370, and transmits
`the information to Device A. Id. at 10:62–11:22. The transmitted
`information can be profile information regarding User B, which may include
`a variety of personal information about User B and other information,
`including “items or services for sale.” Id. at 11:23–33.
`2. Swartz
` Swartz discloses a marketing and shopping system. Ex. 1007,
`1:20–25. Figure 1 shows the system and is reproduced below:
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`Figure 1 shows a block diagram of a preferred embodiment of the system,
`which includes portable terminals 12A–12F and central host 14. Id.
`at 3:62–63, 4:58–5:23, 9:8–11. In use, customers identify themselves to the
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`system, such as by inserting a loyalty card into a card reader. Id.
`at 18:29–33. The system then assigns a portable terminal to the user. Id.
`at 18:58–62. Alternatively, customers can use their own portable terminals.
`Id. at 19:48–49. The customer then proceeds through the store and uses the
`portable terminal to record items the customer wishes to purchase. Id.
`at 20:18–19. This can be done by, for example, using the portable terminal
`to scan a bar code on each item. Id. at 20:19–27. After the customer has
`selected all of the items to be purchased, the customer returns the portable
`terminal to the dispenser unit, and information collected with the portable
`terminal regarding the purchased items is processed by a central processing
`unit. Id. at 22:1–8. The customer then pays for the selected products, with
`the system accounting for any discounts or coupons to be applied. Id.
`at 23:8–11, 23:37–45. By allowing the customers, rather than store
`employees, to scan and bag their selected items as they shop, the store saves
`money and the customer saves time. Id. at 22:48–60.
`3. Kulakowski
` Kulakowski discloses “a network security system and method for
`detecting clones of true or properly registered client devices attempting to
`steal services without payment or otherwise mimic a real client device.”
`Ex. 1013 ¶ 2. Kulakowski recognizes that malfeasants attempt to steal
`distributed services by creating multiple clients with credentials identical to
`those of a valid client. Id. ¶ 3. Kulakowski’s system purports to detect such
`cloned devices. Id. ¶ 5.
` Figure 4 is a flow diagram illustrating operation of Kulakowski’s
`system and is reproduced below:
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`Figure 4 is a flow diagram illustrating a method for detecting the presence of
`cloned client devices. Ex. 1013 ¶ 48. The detection process begins when a
`client device sends a message to a system server (step 40). Id. The message
`is adapted to include embedded therein a covert identifier derived from one
`or more operational events at the client device. Id. ¶¶ 6, 37. The covert
`identifier is unique to the specific client device and is based on covert data
`values such as the number of times a client has performed a certain event or
`the microsecond time of day that an event occurred. Id. ¶¶ 8, 34, 50. The
`server extracts the covert identifier upon receiving the message (step 42) and
`compares the extracted covert identifier with stored values corresponding to
`the client credentials (step 44). Id. ¶ 48. The server then determines
`whether there is a match (step 45). Id. If so, the message is processed
`further per normal operating procedures (step 48). Id. If there is no match,
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`the server generates a report to the system operator indicating that the client
`credentials may have been cloned (step 46). Id. The system operator can
`then take further action as deemed appropriate. Id. ¶ 41.
`E. Asserted Anticipation by or Obviousness in View of Mgrdechian
` Petitioner argues that claims 1, 5, 9, 12, 14, 15, 22, and 24 would have
`been unpatentable as being anticipated by or obvious in view of Mgrdechian.
`Pet. 20–53. In support of its showing, Petitioner relies upon the Williams
`Declaration. Id. (citing Ex. 1003). We have reviewed the Petition, Patent
`Owner Response, Petitioner Reply, Patent Owner Sur-reply, and evidence of
`record and determine that, for the reasons explained below, Petitioner has
`shown, by a preponderance of the evidence that claims 1, 5, 9, 12, 14, 15,
`22, and 24 would have been unpatentable in view of Mgrdechian.
`1. Independent Claim 1
` Petitioner relies on Mgrdechian to disclose or suggest a method of
`using a server to facilitate a transaction between wireless devices as recited
`in claim 1. Pet. 27–42.
`a. The Preamble
` Claim 1 recites “[a] method for fac ilitating a transaction between a
`first wireless device and a second wireless device utilizing a server.”
`Ex. 1001, 23:22–24. Petitioner maps Mgrdechian’s “Device A,” which
`Petitioner characterizes as “a customer’s ‘wireless device,’” to the recited
`first wireless device and “Device B,” which Petitioner characterizes as “a
`‘business[’s]’ ‘wireless device,’” to the recited second wireless device.
`Pet. 27 (alteration in original). Petitioner argues that Mgrdechian discloses
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`an exchange of information between these devices using a server,
`specifically noting an exchange of information “for ‘electronic commerce
`applications including micro-payments.’” Id. at 27–28 (citing Ex. 1005,
`1:31–34, 5:4–7, 5:16–20, 7:43–45, 10:48–56).
` Patent Owner does not contest this aspect of the Petition. See
`generally PO Resp.
` We are persuaded by Petitioner’s contentions. Mgrdechian discloses a
`wireless communication system and method that provides an exchange of
`information between wireless devices. Ex. 1005, 1:32–35. In general,
`communication is initiated by a first user, referred to as the initiator or
`“User A” using “Device A,” who wants to gather information about another
`user, referred to as the target or “User B” using “Device B.” Id. at 9:40–55.
`Device A initiates communication by transmitting an identification request
`over the local wireless protocol. Id. at 10:38–40. Wireless devices within
`range of Device A, such as Device B, receive the request and respond by
`sending a reply message that includes that device’s identification (“device
`ID”). Id. at 10:41–47. Mgrdechian discloses that its “service and/or
`hardware” can be used “for the electronic commerce applications including
`micropayments,” which “are prepaid accounts that may be used for low
`dollar amount purchases.” Id. at 15:11–15; see also id. at 7:43–45.
`Mgrdechian discloses that “[u]sers of the device and service (i.e. senders or
`recipients, or both), may include individuals, businesses, not-for-profit
`organizations, advertisers, political action groups, or any other
`organization.” Id. at 8:1–4.
` Accordingly, for the foregoing reasons, to the extent the preamble is
`limiting, Mgrdechian supports Petitioner’s contentions.
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`b. The Communicating Recitation
` Claim 1 recites “communicating an identifier associated with said
`second wireless device to said first wireless device using a short range
`wireless connection, said first wireless device providing said identifier to
`said server.” Ex. 1001, 23:25–28. Petitioner maps the device identification
`of Device B to the recited identifier and the remote computer system to the
`recited server. Pet. 30. Petitioner argues that Device B transmits its
`identifier to Device A via Bluetooth and that Device A transmits the device
`identification to the remote computer system. Id.; see also id. at 30–32
`(citing Ex. 1005, 3:14–24, 5:4–7, 5:16–20, 6:20–29, 8:1–4, 9:40–53,
`10:10–15, Fig. 3A).
` Patent Owner does not contest this aspect of the Petition. See
`generally PO Resp.
` We are persuaded by Petitioner’s contentions. As noted above,
`Mgrdechian’s Device B receives an identification request from Device A
`and responds by sending a reply message that includes its device ID to
`Device A. Ex. 1005, 10:41–47. Device A receives the reply message and
`transmits the device ID to the remote computer system over the wireless
`network and the Internet. Id. at 10:48–52. The remote computer system
`“may be an Internet server computer and may include multiple computers
`coupled to the Internet for processing information.” Id. at 10:52–54.
` Accordingly, for the foregoing reasons, Mgrdechian supports
`Petitioner’s contentions.
`c. The Establishing Recitation
` Claim 1 recites “said server establishing location information
`associated with said first and said second wireless devices.” Ex. 1001,
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`23:28–30. Petitioner argues that Mgrdechian’s server correlates location
`information for Device A and Device B “because both are communicating
`using the ‘local wireless protocol’ and thus in ‘physical proximity’ to one
`another.” Pet. 33 (citing Ex. 1005, 6:20–29, 6:62–7:5, 10:10–15, 10:22–25,
`14:49–63, 20:35–43). Petitioner argues that if Device B is associated with a
`business and in a fixed location, the server determines the location of both
`devices because the server retrieves profile information regarding the
`business device, “which includes the business’s ‘address,’” and Device A is
`in “physical proximity” with the business device. Id. (citing Ex. 1005,
`6:20–29, 8:5–14, 10:22–25, 11:10–22, 14:49–63).
` Alternatively, Petitioner argues that the server determines the “GPS
`information” of each device in order to provide the location information of
`nearby devices. Pet. 33 (citing Ex. 1005, 23:51–57, 24:14–25). Petitioner
`argues that it would have been obvious for the server to determine device
`location via GPS “to enable the server to establish geographic location
`information for both devices . . . such that the server advantageously can
`more precisely determine whether the two devices are operating ‘in the same
`area’ and have not moved away from one another since exchanging
`identifiers via Bluetooth in order to authorize a transaction.” Id. (citing
`Ex. 1003 ¶¶ 120, 123; Ex. 1005, 6:62–7:5, 10:29–38, 23:51–57, 24:14–25).
` Patent Owner does not contest this aspect of the Petition. See
`generally PO Resp.
` We are persuaded by Petitioner’s contentions. Mgrdechian discloses
`that “Device A may be a business or advertiser” and that “[t]he Devices (A
`and B) themselves can be of multiple forms” and “can have the capability to
`act as both Sender and Recipient.” Ex. 1005, 6:20–29, 14:51–55. Thus, we
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`find that Mgrdechian discloses that Device B can be a business device as
`asserted by Petitioner. Mgrdechian discloses that the profile information
`associated with users includes their addresses. Id. at 8:7–12. The server
`accesses this profile information based on the received device ID and
`transmits the information to the initiating device. Id. at 10:62–11:22.
` Mgrdechian discloses that “GPS information rather than direct
`communications between devices [can be] used to provide responses to
`User A’s request to initiate messaging or other actions.” Ex. 1005, 7:16–19.
`“GPS information [can be] used for determining target devices operating in
`physical proximity to an initiating device.” Id. at 23:52–54.
` Accordingly, for the foregoing reasons, Mgrdechian supports
`Petitioner’s contentions.
`d. The Determining and Transferring Recitation
` Claim 1 recites “determining authentication information relating to
`said second wireless device or an entity associated with said second wireless
`device, transferring said authentication information between the server and
`the first wireless device.” Ex. 1001, 23:31–35. Petitioner refers to this
`recitation as “1.c” and maps the profile information of Device B to the
`recited authentication information and argues that the server sends the
`profile information to Device A. Pet. 36; see also id. at 36–38 (citing
`Ex. 1005, 4:4–14, 5:4–10, 5:21–30, 6:20–29, 8:5–14, 10:61–11:4, 11:28–33,
`12:18–23, 14:49–63). Petitioner notes that the profile information can
`include images and argues that “[t]he business’s profile information
`authenticates its device by demonstrating that the device is associated with
`the business.” Id. at 36–37.
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` As noted above, Mgrdechian’s remote server retrieves and sends to
`Device A the profile information of Device B. Ex. 1005, 10:62–11:33. This
`profile information can include “images of the users associated with the
`IDs.” Id. at 5:4–10. “Once Device A has received images of the
`neighboring users from the server . . . , User A can scroll through them to
`uniquely select the [entity] with whom they are attempting to
`communicate . . . .” Id. at 5:21–24.
` Patent Owner reads the Institution Decision to interpret the Petition to
`map the recited “authentication information” to “profile information of both
`users [which] can include filter parameters that restrict from what entities a
`user will accept messages.” PO Resp. 21 (alteration in original) (quoting
`Inst. Dec. 33). Patent Owner argues that, “if the filter parameters in a user
`profile are equivalent to the claimed ‘authentication information’ as the
`Board provided in its initial review, this cannot meet Element 1c because the
`filter parameters are not ‘transferred between the server and the first wireless
`device.’” Id. at 22; see also PO Sur-reply 2–3.
` Petitioner argues that “[Patent Owner] mistakenly contends
`Mgrdechian’s filter parameters are the ‘authentication information.’” Pet.
`Reply 4 (citing PO Resp. 22). Rather, “the business’s profile is the claimed
`authentication information.” Id. (citing Pet. 36–38). Petitioner argues that
`“[Patent Owner] also conflates Petitioner’s (and the Board’s) explanation of
`[1.c] (relating to authentication information) with that of [1.d] (relating to
`authorization based in part on authentication information).” Id.
` Patent Owner misreads the Institution Decision. As we explained,
`“Petitioner maps the profile information of Device B to the recited
`authentication information and argues that the server sends the profile
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`information to Device A.” Inst. Dec. 30 (citing Pet. 36). As we also
`explained, “Mgrdechian’s server uses the device ID (the identifier) received
`from Device A to retrieve profile information (the authentication
`information) associated with that ID (regarding User B).” Id. at 33
`(emphasis added) (citing Ex. 1005, 10:62–11:22). The discussion of the
`Institution Decision quoted and discussed by Patent Owner relates to the step
`of providing authorization. See PO Resp. 21 (quoting Inst. Dec. 33); PO
`Sur-reply 2 (citing same).
` Accordingly, for the foregoing reasons, Mgrdechian supports
`Petitioner’s contentions.
`e. The Providing Recitation
` Claim 1 recites “said server providing authorization to said first
`wireless device or said second wireless device to proceed with said
`transaction based at least in part upon said identifier, said authentication
`information and the location information of said first and second wireless
`device.” Ex. 1001, 23:36–40. Petitioner argues that the profile information
`sent from the server to Device A includes “items or services for sale,” from
`which User A selects an item or service to purchase by sending a message to
`the server. Pet. 39 (citing Ex. 1005, 3:45–58, 6:20–29, 7:22–33, 11:28–33,
`12:18–23, 15:11–15, 17:67–18:6). Petitioner argues that the server
`authorizes Device A to send micropayment information to Device B. Id.
`(citing Ex. 1005, 6:20–29, 7:22–33, 8:1–4, 14:49–63, 15:11–15). Petitioner
`argues that this authorization is based on 1) the device ID (that is, the recited
`identifier) of Device B because the server uses this information to determine
`where Device A sends messages and to retrieve the profile information of
`Device B; 2) the profile information of Device B (that is, the recited
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`authentication information) because the server retrieves the profile
`information, including filtering preferences, of Device B and applies the
`filtering preferences to Device A; and 3) the location information of the
`devices because the server only allows communication between the devices
`if they are in the same area. Id. at 39–40 (citing Ex. 1005, 3:45–58, 4:4–14,
`5:4–10, 5:20–30, 6:20–29, 6:62–7:5, 7:22–33, 8:1–4, 10:29–38, 13:50–14:3,
`14:49–63, 15:11–15, 17:67–18:6).
` Patent Owner makes several arguments regarding this recitation.
`First, Patent Owner argues that Mgrdechian does not provide a thorough
`description of its electronic commerce application. PO Resp. 23–24. Patent
`Owner argues that “it is the user who provides ‘credit card authorization’ to